Diago Brands Vs Great Galleon Venture

DATE OF JUDGMENT: 02.08.2022

CASE: CS(Comm) 87 of 2021

NAME OF HON'BLE COURT: High Court of Delhi

NAME OF HON'BLE JUDGE: The Hon'ble Justice Shri Sanjeev Narula

CASE TITLE: Diago Brands Vs Great Galleon Venture

Question is this, whether a registered design can also be said to be invalid on the grounds of mosaicing. he Hon'ble High Court of Delhi was having an occasion to deal with one of such issue in Suit bearing CS Comm No. 87 of 2022 titled as Diago Brands Vs Great Galleon Ventures Limited.

Subject matter Suit was filed by the Plaintiff on the basis of basis of their registered design under no.306577 in relation to their unique shaped bottle. Besides the design registration, the Plaintiff also asserted common law right in trade dress and get us of Hipster bottle.

Plaintiff was dealing with alchoholic products under the Trademark Black Dog. The plaintiff was claiming right in unique colur combination of said Hipster Bottle as well. These products were sold by the plaintiff under unique design Hipster Bottle.

Subject matter suit was filed by the Plaintiff on the grounds inter alia that the Defendant was selling the alchohol in a bottle under the Trademark GOA GOLD, which according to the plaintiff , was not only infringing the registered design of the Plaintiff ,but was also violating common law rights of the plaintiff in relation to entire trade dress and get up of said bottle.

The Defendant raised various grounds , besides also attacking novelty by mosaicing elements of various prior arts. The Defendant alleged that Plaintiff is not the author of the subjact matter design. Subject matter design has been authored by an agency. 

There was no any agreement between the said agency and the Plaintiff to show that Plaintiff was the owner of the subject matter Design.

In Para No. 25,26 of the Judgement, the Hon'ble High Court of Delhi made reference to Section 2(1)(j) of the Designs Act 2000 and observed that in case one person get the work created on their behalf by some other one, the ownership vests with the first person. 

As in the present , it was evident the plaintiff has outsourced the design to the the agency. It was the plaintiff , who got the design Created by the agency, hence the same was held to be author and owner of design.

The Defendant raised another argument that design registration of the plaintiff that design registration is only prima facie evidence of validity and that the subject matter design of the plaintiff is recent one. The Hon'ble High Court of Delhi observed that there can not be any difference between the design being recently granted or old. 

Regarding the argument of the defendant that design registration is merely prima facie evidence of validity. The Hon'ble High Court of Delhi observed that If registered design appears to be prima facie valid and the plaintiff proves the case of prima facie case in its favour then injunction has to be granted.

Ocular comparison was considered to be true test while evaluating the infringement of registered design. The Court has to see whether overall visual effect of both the competing designs. 

While making comparison between both of the designs, what court has to see is the similarity and not the dissimilarity. In the present case, the Hon'ble High Court of Delhi has observed that the defendant has copied all the essential feature of plaintiff's design in Hipster bottle.

The Defendant tried to apply the test of the term Novelty used in Patent Act 1970 also in relation to Design Act 2000.The Hon'ble High Court of Delhi, however brushed aside this endeavor of the Defendant by observing that the term novelty used in Design Act simple means new and original. 

It simply imply that the term Novelty used in Design Act 2000 must be interpreted differently from the term Novelty used in Patent Act 1970.It is submitted that it is apparently so as the scope of Design Act 2000 and Patent Act 1970 is quite different.

The Defendant again tried to apply the concept of mosaicing as prevailent in the matters pertaining to Patent Dispute. In cases of Patent Infringement, the Defendant may successfully defend its case by mosaicing of different elements taken from several prior arts and there by establish that the Patent impugned lacks inventive step.

The Defendant , in this case also tried to।defeat Plaintiff's Hipster shaped Design bottle by mosaicing of different elements taken from several prior arts. The Hon'ble High Court of Delhi , however rejected this argument of the Defendant and observed that a registered Design can not be defeated on the basis of mosaicing.

Thus it is clear that in order to defeat a registered Design , what the defendant is required to prove is that availability of all the elements of Plaintiff's registered Design in a single Prior Art. In this case,।the Defendant was unable to establish so.

Another argument of the Defendant was that the Plaintiff's Hipster Bottle Design was functional.Hence the Plaintiff is not entitled to protection. 

The Hon'ble High Court of Delhi however rejected this argument of the Defendant by observing that in order to get defense of functionality to succeed, the Defendant has to establish that it is the only shape through which this functionality can be achieved. 

Naturally the Defendant was unable to pass this test of functionality as set out by the Hon'ble High Court of Delhi in present case.

The Hon'ble High Court of Delhi, however declined to grant any relief pertaining to Trade Dress.

The Court observed that Trade dress is a combination of various element put together. It is submitted that Trade Dress is a concept which is much much wider than Design of a bottle or shape of a bottle.

 

In the Opinion of Court ,not only trade dress of Defendant was different but also because of this fact that trademark GOA is prominently displayed on defendants bottle, no case of passing off was made out.

Thus it was a unique case in the case that the Plaintiff was able to succeed in proving that case of Design Infringement, however failed in establish the case of violation of common law rights in Trade Dress of Hipster Shaped Bottle.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi

ajayamitabh7@gmail.com, 9990389539

Akash Aggarwal Vs Flipkart Internet Private Limited and Others

DATE OF JUDGMENT: 02.08.2022

CASE: CS(Comm) 492 of 2022

NAME OF HON'BLE COURT: High Court of Delhi

NAME OF HON'BLE JUDGE: The Hon'ble Justice Prathiba M Singh

CASE TITLE: Akash Aggarwal Vs Flipkart Internet Private Limited and Others

With advent of new technology, life becomes easy.But nothing comes without a cost. New technology brings in new challenges too.

E marketing is no more exception. Amazon, Flipkart etc are result of new era which made life easy.But also proved new opportunities for carrying out illegal activities too. Latching on other's brand name and other's product image is burning example of this. How to handle this new problem.

In order to understand this problem , it is necessary to know as to how e-markeing happens through e-marketing websites? What could be normal mode of selling a product through e marketing. The business man has to display its product on the e marketing cite in order to attract the customer.

What happens when a e marketing web site allows third party sellers to use images of products, which actually belong to some other party.

What may be liability of such sellers for using the images of third party product? What remedy may be available to such right holder?

Whether such latching on of right holders name and images of the right holders product by the third party is permissible under the law?

If not permissible in law, then how the right of a right holder can be protected? Whether plaintiff would be entitled to the relief of Infringement of trademark?

Or whether the plaintiff would have to take recourse of action of Passing off, which is a common law remedy?

One of such case came up before the Hon'ble High Court of Delhi recently in Suit bearing CS(Comm) 492 of 2022 titled as Akash Aggarwal Vs Flipkart Internet Private Limited and Others.

The fact of the case was that the Plaintiff was carrying on its business under the Trademark V Tradition. The Plaintiff was selling apparels on the e marking website namely Flipkart.

This case of the Plaintiff was that Flipkart was encouraging and allowing third-party sellers to ‘latch on’ and use the mark ‘V Tradition’, along with the photographs of the Plaintiff’s products, on the said platform.

The subject matter suit was filed seeking reliefs against the e marketing website Flipkart from permitting third-party sellers to ‘latch on’ to the name and the products of the plaintiff. 

The plaintiff sought the relief of inter alia are restraining Flipkart from allowing any person or party to portray itself and/or conduct its business on the website of Defendant No. 1 as ‘more sellers’ of goods offered for sale by the Plaintiff on his own product listings on the website of Defendant No. 1 under the Plaintiff’s Trademarks and from enabling the unauthorized sellers from using the product images of the Plaintiff’s product listings and name.

The term latching on by the defendant , used by the plaintiff in the present case was the unauthorized and illegal use of images of the plaintiff's product and plaintiff's name by the defendants. The Flipkart was reflecting the names of other entity as more sellers of the plaintiff's product.

Plaintiff was aggrieved by this fact that Flipkart was not only allowing other third entity to use the name and images of the product but also showing them as more sellers of the plaintiff's product. Thus Flipkart was guilty of latching on.

In this case the plaintiff has put on record the documents to show that when ever a seller wishes to place some listing for particular category of product, then best seller products are being reflected. 

In this process the images and name of plaintiff's products are allowed to be added on the listing page of third seller without the consent of the plaintiff. Thus Flipkart was allowing other sellers to latch on name and images of plaintiff's product without its permission.

The Hon'ble High Court of Delhi observed that such kind of latching on feature is not permissible under the passing off. It is submitted that common law right of a right holder is a very right.

In such kind of violation is well protected under the Trademarks Law. The Right holder can seek the relief of passing off against such latching off. It would be considered as unauthorized use of Plaintiff's trademark without consent.

Accordingly the Hon'ble High Court of Delhi was pleased to grant relief against such latching on activities. The Defendant No.1 namely Flipkart was also directed to disable this feature.

Thus in this case we have seen that the Hon'ble High Court of Delhi has protected the plaintiff against such latching on activities by the violators.

This is but natural that law makers can not envisage all future incidences , while making the law. This is why there has always been gap between the law makers and law brakers. Now it is the responsibility of judiciary to fill up this gap and so has rightly been done in this case .

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi

ajayamitabh7@gmail.com, 9990389539

Kamdhenu Limited Vs Aashiana Rolling Mills Ltd.

Order Date:05.08.2022

Case No. RFA (OS) (Comm) 4 of 2021

Delhi High Court

Vibhu Bakhru and Amit Mahajan H.J.

Kamdhenu Limited Vs Aashiana Rolling Mills Ltd.

 

The present Appeal was filed against dismissal of Suit for design Infringement on the application filed by the Defendant under Order 13-A of the Commercial Court Act. The Hon’ble Single Judge dismissed the suit by holding that the subject matter design of the Plaintiff is a prior published design in view of British Standard B500C. The Hon’ble Division Bench , High Court of Delhi was pleased to dismiss the Appeal by reiterating the finding of Single Judge that the subject matter design of the Plaintiff is a prior published design.

 

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi

ajayamitabh7@gmail.com, 9990389539

Victoria Foods Pvt. Ltd. Vs Rajdhani Masala Company

Order Date:02.08.2022

Suit No. CS(Comm) 108 of 2021

Delhi High Court

Prathiba M Singh, H.J.

Victoria Foods Pvt. Ltd. Vs Rajdhani Masala Company

 

The Defendant earlier made statement that they are willing to finally settle the matter by changing the Trademark. How ever on next day they resiled from the statement given. In spite of injunction order they keep on selling the impugned products. The cost of Rs. 30 Lakh was imposed on defendant for committing contempt of court.

 

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi

ajayamitabh7@gmail.com, 9990389539

#IP_Adjutor  #Legal #Law #Legalblog #Trademark_infringement #Ipr_update #Copyright_infringement #Ipr_news  #Design_infringement #Patent_infringement #IPR #Intellectual_property_right #Iplaw #Ip_update #Legal_update

TV Today Network Vs News Laundry Media

DATE OF JUDGMENT: 29.07.2022

CASE: CS(Comm) 551 of 2021

NAME OF HON'BLE COURT:  High Court of Delhi

NAME OF HON'BLE JUDGE: The Hon'ble Justice Asha Menon

CASE TITLE: TV Today Network Vs News Laundry Media

The Plaintiff namely INDIA TODAY GROUP is a well known Media News Company and owner and proprietor of Trademark AAJ TAK since the year 2009. It was the claim of Plaintiff that in the year 2021, the Plaintiff launched a new channel named „Good News Today‟ or „GNT‟, which was a 24x7 Hindi News Channel and was meant to broadcast true stories that foster goodwill and enrich the lives of the audiences.

The subject matter suit was filed by the Plaintiff against the ground inter alia that the same has not only published the copyrighted video contents of the Plaintiff thereby making themselves guilty for copyright infringement but also has lowered the goodwill of plaintiff there by guilty of defamation also.

The Hon'ble Court rejected the argument of the Defendant that the subject matter suit is not a commercial dispute by making reference to Section 2(1)(c) of commercial court Act which says that all disputes arising of various clauses mentioned therein, are commercial disputes. As the subject matter suit was arising out of copyright infringement and defamation , the same was held to be commercial dispute.

The Hon'ble High Court was pleased to reject this argument of the Defendant that their activities were protected under right to comment. The Court observed further that use of words by defendants such as, “shit standards”, “shit playing” on the channel, “shit reporters”, “shit show”, would show, that programmes/shows of the plaintiff are bad. There by their activities are not covered under the right of fair criticism , but rather they are defaming the Plaintiff.

The Hon'ble Court also found the Defendant prima facie guilty of infringement of copyright and defamation, however injunction in favour of the Plaintiff was declined as balance of convenience was titled in favour of the Defendant.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi

ajayamitabh7@gmail.com, 9990389539

A.O.Smith Corporation and Another Vs Star Smith Export Pvt. Ltd.

Order Date:03.08.2022
Suit No. CS(Comm) 532 of 2022
Delhi High Court
Prathiba M Singh, H.J.
A.O.Smith Corporation and Another Vs Star Smith Export Pvt. Ltd.

Plaintiff’s Trademark A.O.Smith and Blue Diamond

Plaintiff’s web site:www.aosmith.com

Plaintiff's Claimed Worldwide User:1874

Plaintiff's Claimed Indian User:2006

Plaintiff's Earliest Registration in India in class 07 and 11:Effective since 22.03.2008

Plaintiff's Product:Geysers, Purification Systems, Water Heater, Boilers and other related equipment.

Defendant's Incorporation: Star Smith Export Private Limited on 01.08.2020

Defendant’s Trademark :Star Smith

Defendant’s web site www.starsmith.com

Defendant's Product:for identical products such as Geysers, Purification System, Water Purifiers, RO System

The Explanation Given by Defendant for adoption of Trademark SMITH in its email Reply :The Defendant sought to justify the adoption of the mark ‘STARSMITH’ on the ground that the son of the Defendant is named Smith.

However in reply to Legal Notice they have give। Just different Reason for adoption that that the word ‘SMITH’ is a dictionary word which means ‘a worker in a factory.

Accordingly the Hon'ble High Court of Delhi was pleased to grant Ex-parte Injunction in favour of the Plaintiff and against the Defendant holding adoption of impugned Trademark by the Defendant prima facie appears to be dishonest.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi
ajayamitabh7@gmail.com, 9990389539

FreeElective Network Private Limited Vs Matrimony.com. Ltd.

DATE OF JUDGMENT: 15.07.2022

CASE: Civil Suit(Comm.Div) No.122 of 2021 and O.A.Nos.826 & 828 of 2021 and A.No.442 of 2022

NAME OF HON'BLE COURT:  High Court of Judicature at Madras

NAME OF HON'BLE JUDGE: The Hon'ble Justice Senthil Kumar Ramamoorthy 

CASE TITLE: FreeElective Network Private Limited Vs Matrimony.com. Ltd.

The Plaintiff have device registration for the Trademark JODI 365. The Plaintiff filed subject matter Suit on the basis of proprietary right in the Trademark JODI 365 since the year 2009 for its flagship matchmaking platform and complementary wedding planning market network, respectively.

The Suit was filed against the Defendant's 

when in the month of October 2021, the Plaintiff came to know that the Defendant had launched a mobile app under the name “Jodii”. 

The Plaintiff's Trademark was JODI 365 device composite Trademark. The Hon'ble Court was pleased to decline any relief pertaining to the infringement on the basis of JODI 365 composite trademark as from the Record, it was apparent that the non distinctive element of the composite Device Trademark failed to achieve any distinctiveness. 

The Hon'ble Court was also pleased to decline any relief pertaining to passing off on the ground that competing trademark/trade dress were in question were not similar and there was no any possibility of confusion and deception.

In view of the above relief pertaining to infringement and passing off both were declined to the Plaintiff.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi

ajayamitabh7@gmail.com, 9990389539

Satyanarain Khandelwal Vs Prem Arora

DATE OF JUDGMENT: 18.07.2022

CASE:TR.P.(C) No.47 of 2021 

NAME OF HON'BLE COURT:  High Court of Delhi

NAME OF HON'BLE JUDGE: The Hon’ble Chief Justice and Mr. Subramonium Prasad

CASE TITLE: Satyanarain Khandelwal Vs Prem Arora

The Hon’ble High Court of Delhi, in a recent Judgment, has cleared the doubt as to whether the provisions of commercial court act are applicable retrospectively.

 

This Judgment has come in multiple Transfer Petitions filed by the Petitioner seeking transfer of Suit from the Court of Ld. Additional District Judge to the Commercial Courts.

The Hon'ble High Court of Delhi was pleased to dismiss the Transfer Petitions of the Petitioners after observing that provisions of Commercial Courts Act are not applicable retrospectively. 

The basic idea behind this Judgment is that the Hon'ble High Court of Delhi simply reiterated the well settled principle of law that any Act, until specifically made effective retrospectively , is effect since the day it was made applicable. 

This was also applicable to the Commercial Court Act 2015 , which was subsequently amended in the year 2018. In view of amending act 2018, the provisions of this act was made applicable only since 03.05.2018.

In view of the above, the provisions of this Act can not be made applicable to the matters instituted prior to the 03.05.2018.

Since the subject matter Transfer Petitions were filed pertaining to the Civil Suits, instituted prior to the year 03.05.2018, hence the provisions of commercial court act could not be made applicable thereto.

Resultantly the provisions of Commercial Court Act 2015 were held inapplicable to the subject matter suits which were filed prior to the relevant date i.e. 03.05.2022.

Similar issues on the scope of maintainability of Commercial Suits valued less than Rs. 3 lakh,before the Commercial Court came up before the Hon'ble Single Judge in Appeal bearing FAOIPD 1/2022 titled as Vishal Pipe Vs  Bhavya Pipes, which was disposed of vide Judgment dated 03.06.2022.

The Hon'ble Singh Judge, High Court of Delhi , in the said matter observed that  usually, in all IPR cases, the valuation ought to be Rs.3 lakhs and above and proper Court fee would have to be paid accordingly. All IPR suits to be instituted before District Courts, would therefore, first be instituted before the District Judge (Commercial). 

However the Hon'ble Single Judge, while making afore mentioned observation also indicated that in order to however maintain consistency and clarify in adjudication , even such suits which may be valued below Rs.3 lakhs may continue to be listed before Commercial Court , however provisions of Commercial Court Act shall not apply. 

The cumulative effect of the present Judgment passed by Hon'ble High Court of Delhi and the afore mentioned Judgement dated 03.08.2022 passed in the FAO IPD No.1 of 2022 would be that all commercial suits filed prior to 03.05.2018 would be listed before the Commercial Judges, however the provisions Commercial Court Act would not apply in those Suits.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi

ajayamitabh7@gmail.com, 9990389539

Sarabpreet Singh Vs State of Jharkhand

DATE OF JUDGMENT: 22.07.2022

CASE:CR.M.P. 1514 of 2019

NAME OF HON'BLE COURT:  High Court of Jharkhand 

NAME OF HON'BLE JUDGE: The Hon'ble Justice Sanjay Kuamar Dwivedi 

CASE TITLE: Sarabpreet Singh Vs State of Jharkhand

Petitioner filed the subject matter Petition seeking quashing of Criminal proceeding initiated by Cyber Crime Cell bearing No.  Cyber Crime P.S. Case No.04/201 and FIR lodged subsequent thereto.

This criminal proceeding was initiated on the basis of complainant who alleged that Petitioner , by circulating the alleged video, not only defaming the Hon'ble Chief Minister but also infringing the Trademark and copyright of the Complainant.

The Hon'ble High Court of Jharkhand was pleased to allow the subject matter Petition on the grounds inter alia that provisions of the Trademarks Act 1999 has not been followed in the present case.

The Hon'ble High Court of Jharkhand observed that as per Sub-section (4) of Section 115 of the Trade Marks Act, opinion of the Registrar is required to be obtained before making search and seizure, which has not been followed in the case in hand.  

Even the matter was initiated by a Police inspector, which is not the mandate of Section 115 of Trademarks Act 1999.

Section 115 of Trademarks Act 1999 provides as under:

Section 115 in The Trade Marks Act, 1999

115. Cognizance of certain offences and the powers of police officer for search and seizure.

(1) No court shall take cognizance of an offence under section 107 or section 108 or section 109 except on complaint in writing made by the Registrar or any officer authorised by him in writing: 

Provided that in relation to clause (c) of sub-section (1) of section 107, 

a court shall take cognizance of an offence on the basis of a certificate issued by the Registrar to the effect that a registered trade mark has been represented as registered in respect of any goods or services in respect of which it is not in fact registered.

(2) No court inferior to that of a Metropolitan Magistrate or Judicial Magistrate of the first class shall try an offence under this Act.

(3) The offences under section 103 or section 104 or section 105 shall be cognizable.

(4) Any police officer not below the rank of deputy superintendent of police or equivalent, may, if he is satisfied that any of the offenses referred to in sub-section (3) has been, 

is being, or is likely to be, committed, search and seize without warrant the goods, die, block, machine, plate, other instruments or things involved in committing the offence, 

wherever found, and all the articles so seized shall, as soon as practicable, be produced before a Judicial Magistrate of the first class or Metropolitan Magistrate, as the case may be: Provided that the police officer, before making any search and seizure, shall obtain the opinion of the Registrar on facts involved in the offence relating to trade mark and shall abide by the opinion so obtained.

Section 115(4) of Trademarks Act 1999 takes care of situation where criminal proceeding in relation to violation of Trademarks Act 1999 can be imitated.

But there are two conditions , which must be fulfilled. 

First condition is that before initiating any criminal proceeding under the Trade Marks Act 1999, the Opinion of Registrar of Trademark is must.

The second condition is that any police officer not below the rank of deputy superintendent of police or equivalent thereof is entitled to entertain such request.

In a case like the present one , as the procedure laid down in Section 115(4) of the Trade Marks was not followed , the criminal proceeding initiated in violation of Section 115 of Trademarks Act 1999 was rightly quashed.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi

ajayamitabh7@gmail.com, 9990389539

Boehringer Ingelheim Vs The Controller of Patents

DATE OF JUDGMENT: 12.07.2022 CASE:C.A. (COMM.IPD-PAT) 295/2022 NAME OF HON'BLE COURT: High Court of Delhi NAME OF HON'BLE JUDGE: The Hon'ble Justice Prathiba M Singh CASE TITLE: Boehringer Ingelheim Vs The Controller of Patents

What is scope of divisional application in a Patent? What are the criterion for evaluating, where an applicant for Patent can be said to be entitled to a divisional application?  What are basic requisites for a parent application, on the basis of which amendment of the same can be filed resulting into divisional Patent Application?

This Appeal dealt with similar issue. The Appeal was filed against order dated 25.03.2022 by the Ld. Controller of Patent where the request for the Petitioner in relation to divisional application bearing no.20178031279 dated 04.09.2017, titled ‘A medicament of a DPP inhibitor was rejected by the Controller of Patent on the grounds inter alia that the divisional application was having similar claims.

Background of this case was that the Petitioner filed National phase application on 14.11.2008 with 18 claims , in which the Petitioner filed first amendment application in reply to first examination report and proposed to delete all claims except claim no.14,15 and 15A.

Subsequently in the year 2016, 2 more amendment applications were filed, which were there after sought to be converted into divisional application in the 2017. The controller of Patent rejected this application on the ground that the same are beyond the scope of originally filed claims.

Reasons for rejecting the divisional application was mainly on the grounds that since the original amendment applications have already been disallowed by the controller, the divisional application could not have been allowed, which were filed on the basis of amendment applications earlier filed.

Question before the Hon'ble Court was that whether the divisional applications can contain the claims which were not there in the parent application?

The Relevant Section which takes care for the situation, where divisional application may be filed, is Section 16 of the Patent Act 1970. The relevant portion of the same is extracted as under:

"Section 16 Power of Controller to make orders respecting division of application

(1) A person who has made an application for a patent under this Act may, at any time before the grant of Resultantly the provisions of Commercial Court Act 2015 were held inapplicable to the subject matter suits. the patent, if he so desires, or with a view to remedy the objection raised by the Controller on

the ground that the claims of the complete specification relate to more than one invention, file a further application in respect of an invention disclosed in the provisional or complete specification already filed in respect of the first

mentioned application.

(2) The further application under sub-section (1) shall be accompanied by a complete specification, but such complete specification shall not include any matter not in substance disclosed in the complete specification filed in pursuance of the first mentioned application."

Sub section 2 of Section 16 of the Patent Act 1970 provides that complete specification of such divisional Patent Application  shall not include any matter not in substance disclosed in the complete specification filed in pursuance of the first mentioned application.

Thus the Divisional Application can not contains any claims which were not disclosed in the Patent Application, on the basis of which the same was filed.

The other two conditions for filing such amendment application for divisional application is that the amendment must be by way of disclaimer or correction and that the same must be made in order to include facts. Other amendment can not be allowed while filing divisional Application.

As in the Divisional Application, the Plaintiff claimed products patent , which were not in the original patent specification, the same was rightly rejected.

 

In the Original Patent Application there were Claims 1 to 18 claims. These claims were wither use claims or method claims. There was  not even a single product claim in the entire set of claims filed originally.

By introducing amendment for divisional application, the Applicant introduced 25claims.The same were Claims 1-11, 14-18, 20-25 .These subsequently amended divisional patent application, these product patent claims were introduced in the divisional patent application.

Another  important aspect regarding filing of Divisional Application is unity of invention. Section 10(5) of Patent Application provides for this. The same is reproduced as under:

10(5) The claim or claims of a complete specification shall relate to a single invention, or to a group of inventions linked so as to form a single inventive concept, shall be clear and succinct and shall be fairly based on the matter disclosed in the specification.

It means if specification of the parent application only shows single invention or multiple invention resulting in single inventive concept, in that case also divisional application can not succeed.

For a divisional application, there must has to be plurality of invention. Meaning there by the specification of the parent application must contains multiple inventions. Only in that case divisional application can succeed.

The Hon'ble High court of Delhi in the present case observed that divisional application for Patent can not succeed as in the parent application only original 'DPP IV inhibitor' arising out of a Markush formula, in various permutations and combinations describing its use and method for treatment were disclosed, which can not be said to be plurality of invention.

Hence it can be said that for divisional application to succeed, the first criteria is that the amendment should only be by way of correction, disclaimer , incorporation of facts. The second criteria is that the divisional application should not contain any claims which were not disclosed in the Parent application. And the last one is that specification of the parent application must qualify for the test of plurality of invention disclosed in it. If a divisional Patent Application qualify for all these tests, it may qualify to be allowed.

 

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi

ajayamitabh7@gmail.comm 9990389539

Marico Limited Vs Dabur India Limited

DATE OF JUDGMENT: 19.07.2022

CASE: CS No. 264 of 2021 

NAME OF HON'BLE COURT:  High Court of Kolkata

NAME OF HON'BLE JUDGE: The Hon'ble Justice Ravi Krishan Kapoor

CASE TITLE: Marico Limited Vs Dabur India Limited

The Subject matter Suit was filed by the Petitioner seeking relief of permanent injunction for disparagement against the impugned Advertisement namely DABUR AMLA DE SHANTI KE MUKABLE (up to) 50% ZYADA MAZBOOT BAAL”

In fact in this advertisement campaign , the Respondent namely Dabur projected it's product to be 50% better than product  of the Petitioner.

At the impugned Advertisement, there was disclaimer attached that UTPAD NIHAR SHANTI AMLA KE SHABD, DEVICE/LABEL MEIN TRADEMARK KE ADHIKAR ‘MARICO LIMITED’ KE PASS HAIN. Thus the Respondent was making categorical averment against the product of the Petitioner.

The Hon'ble High Court of Kolkata reiterated the settled principle of law  regarding comparative advertisement as laid down in Reckitt & Colman of India Ltd. Vs. M.P. Ramchandran reported in (1999) 19 PTC 741 , which is as under:

"I).A tradesman is entitled to declare his goods to be best in the world, even though the declaration is untrue. 

II) He can also say that his goods are better than his  competitors', even though such statement is untrue. 

III) For the purpose of saying that his goods are the best in the world or his goods are better than his competitors' he can even compare the advantages of his goods over the goods of others. 

IV) He however, cannot, while saying that his goods are better than his competitors', say that his competitors' goods are bad. If he says so, he really slanders the goods of his competitors. In other words he defames his competitors and their goods, which is not permissible. 

In the present case, the Hon'ble High Court of Kolkata was pleased to grant interim relief to the Petitioner by observing that the impugned Advertisement does not amount to be mere puffery. 

The Hon'ble observed that impugned advertisement of the Respondent presents the  petitioner’s product is inferior and bad in comparison to the respondent’s product. 

The court further observed that the overall message which the respondent has tried to convey through the impugned advertisements is that the petitioner’s product does not serve the purpose which it is intended to serve. Thus it is apparent that while doing the comparative advertisement, it is necessary that one should avoid to put competitors product in bad light.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi

ajayamitabh7@gmail.com, 9990389539

#IP_Adjutor  #Legal #Law #Legalblog #Trademark_infringement #Ipr_update #Copyright_infringement #Ipr_news  #Designin_fringement #Patent_infringement #IPR #Intellectual_property_right #Iplaw #Ip_update #Legal_update #Comparative_advertisement #defamation 

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TV Today Network Vs News Laundry Media

DATE OF JUDGEMENT: 29.07.2022
CASE: CS(Comm) 551 of 2021
NAME OF HON'BLE COURT: High Court of Delhi
NAME OF HON'BLE JUDGE: The Hon'ble Justice Asha Menon
CASE TITLE: TV Today Network Vs News Laundry Media

The Plaintiff namely INDIA TODAY GROUP is a well known Media News Company and owner and proprietor of Trademark AAJ TAK since the year 2009. It was the claim of Plaintiff that in the year 2021, the Plaintiff launched a new channel named „Good News Today‟ or „GNT‟, which was a 24x7 Hindi News Channel and was meant to broadcast true stories that foster goodwill and enrich the lives of the audiences.

The subject matter suit was filed by the Plaintiff against the ground inter alia that the same has not only published the copyrighted video contents of the Plaintiff thereby making themselves guilty for copyright infringement but also has lowered the goodwill of plaintiff there by guilty of defamation also.

The Hon'ble Court rejected the argument of the Defendant that the subject matter suit is not a commercial dispute by making reference to Section 2(1)(c) of commercial court Act which says that all disputes arising of various clauses mentioned therein, are commercial disputes.

The Hon'ble High Court was pleased to reject this argument of the Defendant that their activities were protected under right to comment. The Court observed further that use of words by defendants such as, “shit standards”, “shit playing” on the channel, “shit reporters”, “shit show”, would show, that programmes/shows of the plaintiff are bad. There by their activities are not covered under the right of fair criticism , but rather they are defaming the Plaintiff.

The Hon'ble Court also found the Defendant prima facie guilty of infringement of copyright and defamation, however injunction in favour of the Plaintiff was declined as balance of convenience was titled in favour of the Defendant.

Ajay Amitabh Suman, IPR Advocate
Hon'ble High Court of Delhi
ajayamitabh7@gmail.com
9990389539

Free Elective Network Private Limited Vs Matrimony.com. Ltd.

DATE OF JUDGEMENT: 15.07.2022
CASE: Civil Suit(Comm.Div) No.122 of 2021 and O.A.Nos.826 & 828 of 2021 and A.No.442 of 2022
NAME OF HON'BLE COURT: High Court of Judicature at Madras
NAME OF HON'BLE JUDGE: The Hon'ble Justice Senthil Kumar Ramamoorthy
CASE TITLE: FreeElective Network Private Limited Vs Matrimony.com. Ltd.

The Plaintiff have device registration for the Trademark JODI 365. The Plaintiff filed subject matter Suit on the basis of proprietary right in the Trademark JODI 365 since the year 2009 for its flagship matchmaking platform and complementary wedding planning market network, respectively.

The Suit was filed against the Defendant's
when in the month of October 2021, the Plaintiff came to know that the Defendant had launched a mobile app under the name “Jodii”.

The Plaintiff's Trademark was JODI 365 device composite Trademark. The Hon'ble Court was pleased to decline any relief pertaining to the infringement on the basis of JODI 365 composite trademark as from the Record, it was apparent that the non distinctive element of the composite Device Trademark failed to achieve any distinctiveness.

The Hon'ble Court was also pleased to decline any relief pertaining to passing off on the ground that competing trademark/trade dress were in question were not similar and there was no any possibility of confusion and deception.

In view of the above relief pertaining to infringement and passing off both were declined to the Plaintiff.

Ajay Amitabh Suman, IPR Advocate
Hon'ble High Court of Delhi
ajayamitabh7@gmail.com
9990389539